Ex Parte Lyon

Patent Trial and Appeal Board

Jan 30, 2013

10769138 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEOFF M. LYON
___________

Appeal 2011-000511
Application 10/769,138
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000511
Application 10/769,138

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STATEMENT OF THE CASE
Geoff M. Lyon (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-3, 5, 6, 36-39, 41, 42, and 45-47. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1
THE INVENTION
This invention “concerns the use of load sensors working in
conjunction with RFID interrogation to determine the number of tagged
items stored in a particular locality.” Spec., para. [0015].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of inventorying products located on a
shelf for displaying the products to consumers,
said shelf having at least one load sensor and an
RFID sensor, and wherein at least one of the
products contains an RFID tag containing
product type identification, said method
comprising:
identifying a product type of the products
based upon product type information received
from the RFID tag associated with at least one
individual unit of the products and provided
that each individual unit of the products is a
single product type;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 1, 2010) and Reply Brief (“Reply Br.,” filed Jul. 27, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 27, 2010).

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receiving a unit weight for the at least one
individual unit of the identified products using
a unit weight specification associated with the
product type information from the at least one
RFID tag;
weighing the products using the at least one
load sensor positioned in the shelf to determine
a gross weight that reflects an aggregate weight
of the products; and
inventorying the products by calculating the
quantity of products on the shelf by dividing the
gross weight measured with the at least one
load sensor by the unit weight specification for
one individual unit.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lare
Cowe
Goodwin, III
US 5,193,629
US 5,671,362
US 6,547,040 B2
Mar. 16, 1993
Sep. 23, 1997
Apr. 15, 2003

The following rejections are before us for review:
1. Claims 1-3, 5, 6, 36-39, 41, 42, and 45-47 are rejected under 35
U.S.C. §103(a) as being unpatentable over Lare, Goodwin, III,
and Cowe.

ISSUE
The main issue is whether the combination of Lare, Goodwin, III, and
Cowe renders obvious the method of claim 1.
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. We adopt the Examiner findings of fact which appear in the
Examiner’s Answer.
2. Lare states: “In particular, the invention may be applied to the
weighing and counting of items other than coins or notes.” Col.
13, ll. 39-41.

ANALYSIS
The Appellant argues claims 1-3, 5, 6, 36-39, 41, 42, and 45-47 as a
group. App. Br. 9-19. We select claim 1 as the representative claim for this
group, and the remaining claims 2-3, 5, 6, 36-39, 41, 42, and 45-47 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
In contesting the Examiner rejection of claims 1 unpatentable over a
combination of Lare, Goodwin, III, and Cowe, the Appellant makes several
arguments attacking the Examiner’s finding of obviousness. See App. Br. 9-
19 and Reply Br. 5-10. We have carefully considered all of the Appellant’s
arguments and find them unpersuasive as to error in the Examiner’s
rejection. We agree with the Examiner (Ans. 7-9) that the combination of
Lare, Goodwin, III, and Cowe render the claim 1 obvious.
First, we find the Appellant’s arguments unpersuasive because at their
crux is a mischaracterization of Lare’s teachings. The Appellant seems to
imply that Lare’s system is limited to only to weighing notes and coins.
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However, we find Lare’s system is not so limited and can be applied to other
products, as Lare states: “In particular, the invention may be applied to the
weighing and counting of items other than coins or notes.” Col. 13, ll. 39-
41. Therefore, we find that the Appellant’s arguments based on the notes
and coins in Lare unpersuasive.
Second, we find the Appellant’s arguments unpersuasive because they
are not commensurate with the scope of the claims. For example, the
Appellant argues that the claimed product must be the type intended for
display on a shelf. See App. Br. 12 and Reply Br. 5-10. We see nothing in
the claims that so limit the claimed product, and we agree with the Examiner
(Ans. 8) that the preamble’s recitation of “for displaying the products to
consumers” is merely an intended use and does not result in a structure
difference between the claimed invention and the prior art.
Third, we find the to the Appellant’s arguments unpersuasive as they
are directed to the references individually and not to the combination as a
whole. For example, the Appellant argues that “both Lare and Goodwin, III
fail to disclose a method of inventorying products that are located on a shelf
for displaying the products to the customer.” App. Br. 14. However, the
Examiner provided Cowe to teach this limitation. See Ans. 5. “The
question in a §103 case is what the references would collectively suggest to
one of ordinary skill in the art. In re Simon, 46` F.2d 1387, 174 USPQ 114.”
In re Ehrreich, 590 F.2d 902, 909 (CCPA 1979). (Emphasis added).
Fourth, we find the Appellant’s arguments that Lare and Cowe teach
away from the Examiner’s combination (App. Br. 15 and App. Br. 17)
unpersuasive as we see nothing in the teachings of Lare and Cowe, relied
upon by the Appellants, that would discourage one of ordinary skill in the art
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from proposed Examiner’s proposed combination. “A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Accordingly, the rejection of claims 1-3, 5, 6, 36-39, 41, 42, and 45-
47 under 35 U.S.C. § 103(a) as unpatentable over Lare, Goodwin, III, and
Cowe is affirmed.

DECISION
The decision of the Examiner to reject claims 1-3, 5, 6, 36-39, 41, 42,
and 45-47 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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